The Complainant is B.GOOD LLC of Boston, Massachusetts, United States of America ("USA" or "US"), represented by Austin Brinson, USA.
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, USA / Karee Laing, Studio Brand Collective of Houston, Texas, USA, internally represented.
The disputed domain name <bgoodcares.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2018. On June 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 2, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018.
The Center received an email communication from the Respondent on July 23, 2018 consenting to the transfer of the Domain Name, but without further action necessary to effect the transfer.
On July 30, 2018, the Complainant confirmed that it did not consent to any suspension of the proceedings and requested that an administrative panel be appointed to render a decision on the merits.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 3, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a limited liability company organized under the laws of the US state of Massachusetts and headquartered in Boston, Massachusetts. The Complainant owns or franchises casual "fresh food" restaurants under the "B.Good" name, which it has used since 2003. It operates a website at "www.bgood.com". The Complainant holds a US registered trademark for B.GOOD as a standard-character mark, Registration Number 4776657, which was registered on July 21, 2015.
There are now more than 50 "B.Good" restaurants in twelve 12 US states, Canada, Germany, and Switzerland. One such restaurant is located in Spring, Texas in the greater Houston area, where the Respondent is located.
According to the Registrar, the Domain Name was created on May 2, 2018 and initially registered in the name of a domain privacy service. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent Karee Laing of Houston, Texas, USA and her organization as "Studio Brand Collective". A Texas limited liability company with that name is listed in the online database of the Texas Controller of Public Accounts, showing Karee Laing as the registered agent. That company operates a website at "www.studiobrandcollective.com" and describes itself as a Houston digital branding and marketing firm. The website emphasizes the firm's marketing work in the "restaurant and hospitality" industry.
The Complaint explains that one of its franchisees had retained Ms. Laing's firm, Studio Brand Collective ("SBC"), for marketing services. SBC registered the Domain Name "through a proxy service" for the purpose of creating an email address to be used for the franchisee's customer service. As evidenced by an email thread in May and June 2018, attached to the Complaint, the franchisee promptly contacted SBC on learning of the Domain Name registration, because "I can be in big issues with corporate cause of this". (The Complaint observes that the franchise agreement, unsurprisingly, forbids the use of the trademark in domain names.)
Ms. Laing replied as follows on the same day (May 16, 2018):
"So, this email address was created to be used strictly as a way to get feedback from any bad reviews without giving our agency email on the initial contact. We don't use that domain/email in any other place for your marketing or online. We can certainly remove the email address from the messages where listed and update you once that's complete. Unfortunately, we used a proxy house to create the email and can remove the email from your correspondence, but would not be able to transfer the domain".
The franchisee forwarded this response to the Complainant's information technology department, which questioned why the "proxy" could not assist in transferring the Domain Name. Ms. Laing replied that "the company we use manages the domains which are purchased", and the Complainant urged, "please tell them that we are the trademark owner and that the domain should be transferred to our godaddy account". Ms. Laing put the Complainant in touch with "Domain by Proxy", which responded in June 2018 by saying that the Domain Name was different from the trademark, that Domains by Proxy currently owned the Domain Name, and that it would transfer the Domain Name only if the Complainant purchased it at auction. At that time, the Domain Name was being offered for auction on Sedo.com for a starting price of USD 6,499.
At the time of this Decision, the Domain Name resolves to a landing page with the Registrar's logo, headed "Welcome to bgoodcares.com", followed by the statement, "This Web page is parked for FREE, courtesy of GoDaddy.com". The landing page advertises the Registrar's services and publishes pay-per-click ("PPC") links to third-party advertisers.
The original Complaint named "Domains by Proxy" as the Respondent, and "Domain by Proxy" a/k/a "Rod Walters" claimed ownership of the Domain Name in its June 2018 correspondence with the Complainant, as noted above. However, the Registrar subsequently identified Ms. Laing as the registrant and SBC as her organization, and "Domain by Proxy" a/k/a Rod Walters has not thereafter expressed any interest in the Domain Name or in this proceeding. Ms. Laing, SBC, and Domains by Proxy / "Domain By Proxy" a/k/a Rod Walters are accordingly referred to hereafter as the Respondent, except where expressly indicated.
The Panel notes that Domain By Proxy seems to be an entity name used by Rod Walters, and is not Domains By Proxy operated in affiliation with GoDaddy; in support of this conclusion the Panel notes that Domain By Proxy a/k/a Rod Walters uses a gmail address (whereas GoDaddy's Domains By Proxy apparently uses a Domains By Proxy email address) and the singular "Domain" here (versus GoDaddy's plural "Domains").
The Complainant contends that the Domain Name is confusingly similar to its registered B.GOOD trademark. The Complainant asserts that the Respondent has no legitimate interests in the Domain Name because it had no authority to create a Domain Name using the Complainant's mark. The Complainant also argues that the Respondent acted in bad faith by registering the Domain Name to sell it to the trademark owner for an exorbitant amount and making the purchase through a proxy service to confuse or retain ownership.
The Respondent did not reply to the Complainant's contentions. As mentioned above, the Respondent, SBC, suggested in an email to the Center that it was willing to transfer the Domain Name to the Complainant, but did not do so.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The Complainant indisputably holds a registered B.GOOD trademark. The Domain Name incorporates this mark in its entirety, omitting the period that cannot be included in the DNS system for technical reasons, and adding the dictionary word "cares". The Panel does not find that this descriptive addition avoids confusing similarity with the mark, which is not in its entirety a dictionary word or descriptive phrase. As in most cases, the generic Top-Level Domain ("gTLD") ".com" is not a distinguishing feature. See WIPO of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.
The first element of a UDRP complaint "functions primarily as a standing requirement" and entails "a straightforward comparison between the complainant's trademark and the disputed domain name". See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, as the Complainant has here, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Respondent in this case does not dispute that it was aware of the Complainant's B.GOOD trademark. The Respondents Karee Laing and SBC were, in fact, engaged to perform marketing services for one of the Complainant's franchisees. The Respondent also does not dispute that it lacked permission to use the Complainant's trademark in the Domain Name. The June 2018 emails from the Respondent and the franchisee are consistent with the Complainant's assertion that the Respondent registered the Domain Name on its own initiative, without permission from the Complainant or instructions from the franchisee (which also lacked such permission). The Respondent makes no legitimate commercial or noncommercial use of the Domain Name, which has been used only by the Registrar for PPC advertising. Thus, the Complainant has made its prima facie case, and there has been no rebuttal. The second element of the Complaint is established.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following (in which "you" refers to the registrant of the domain name):
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
The Respondents Karee Laing and SBC were clearly aware of the Complainant's business and mark, since they worked as marketing consultants for one of the Complainant's franchisees. Apparently without consulting the Complainant (directly or even indirectly through the franchisee) it chose to register the Domain Name to create a customer service email address, displaying at best a careless disregard for the national chain's trademark policies. Worse, it paid no attention to the default parking practices of the Registrar, allowing the Registrar to use the mark in the Domain Name to misdirect Internet users to a PPC landing page indefinitely for commercial gain. The Respondents Karee Laing and SBC claimed to have no control over the actions of Domain by Proxy a/k/a Rod Walters, which is affiliated with the Registrar, allowing it to claim ownership, refuse to transfer the Domain Name to the Complainant, and demand payment of an amount clearly in excess of out of pocket costs. The record is not clear as to any sense in which Domain by Proxy a/k/a Rod Walters "owned" the Domain Name at that time or whether it acted as an agent of the Respondents Karee Laing and SBC in demanding such payment, or, indeed, whether it acted with Ms. Laing and SBC's knowledge. However, the Respondent's emails indicate that SBC requested the creation of the Domain Name in the first place, through a "proxy house", and the Registrar identifies the Respondent, Karee Laing, as the registrant. The registrant remains accountable for the use of the Domain Name under the terms of the registration agreement. The Panel finds that the Respondent's misleading or irresponsible handling of a Domain Name that exploits the Complainant's trademark evinces bad faith within the meaning of the Policy.
The Panel concludes that the Complainant has established the third element of the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bgoodcares.com> be transferred to the Complainant.
W. Scott Blackmer
Date: August 21, 2018
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